Post-Grant Proceedings

Teamwork between patent attorneys and trial attorneys is essential in modern patent litigation. Many patent disputes today involve not just actual or threatened federal court litigation, the domain of trial attorneys, but also parallel administrative actions in the Patent Trial and Appeal Board (PTAB), which is a tribunal of the US Patent Office, the domain of patent attorneys. These PTAB proceedings are designed to provide faster and cheaper methods for testing the validity of patents and thus have become popular, and even essential, components of patent enforcement and defense strategy. Accordingly, at McCarter, our patent attorneys and trial attorneys work closely to provide coordinated strategy and execution between the PTAB and court proceedings.

That teamwork especially comes into play in the three most prominent forms of post-grant patent challenges: inter partes reviews (IPRs), post-grant reviews (PGRs), and covered business method reviews (CBMs). These administrative actions are hybrid procedures that combine aspects of patent prosecution (the process of applying for patents) and court litigation (such as depositions, motions, and oral argument). As such, the best way to navigate these proceedings is to combine the efforts of patent attorneys, who are experienced in the patented technology and the esoteric practices of the Patent Office, with trial lawyers, who are accomplished in cross-examining witnesses and arguing to judges.